IP Law Watch – Page 41 – Legal issues, law and regulations concerning the world of IP

Green with Envy: Colour Trade Marks in Australia

Sep 05 2016

Frucor Beverages Limited (Frucor), the manufacturer of energy drink, V, has unsuccessfully tried to register a trade mark for the colour green. Last month, Coca-Cola Company (Coca-Cola), the manufacturer of Mother energy drinks, successfully opposed registration of the trade mark filed in 2012 in relation to energy drinks which consisted of the colour green (Pantone 376c), as shown below.

Coca-Cola opposed the trade mark application on the basis that Pantone 376c Green was not capable of distinguishing Frucor’s energy drinks and that the application was defective. While the opposition failed on the latter ground, Coca-Cola was successful in its argument that Pantone 376c Green was not capable of distinguishing V energy drinks from the energy drinks of other traders.

Humira® Update: Big Guns Take Aim at Top-Selling Biologic

Aug 19 2016

AbbVie Inc.’s Humira® (adalimumab) was the top selling drug in 2015. Unsurprisingly, it is the focus of biosimilar applicants and patent challengers aiming to get into the market. We provide this update on three events regarding Humira® that took place over the past two months: (1) Amgen Inc., which is pursuing a biosimilar version of Humira®, received a recommendation toward approval from the U.S. Food and Drug Administration (“FDA”); (2) AbbVie sued Amgen for patent infringement in the U.S. District Court for the District of Delaware, alleging that Amgen infringed several of its patents by seeking FDA approval of its biosimilar version of Humira®; and (3) the U.S. Patent and Trademark Office instituted inter partes review (“IPR”) of a Humira® patent at the request of Boehringer Ingelheim.

Please click here to view the alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

IP Australia Announces New Official Fee Structure For Australian Trade Marks

Aug 12 2016

Australian Trade Mark Applications are Getting Cheaper

Following an extensive review of its fee structure, IP Australia has announced a revised official fee structure that is proposed to take effect from 12.00 am AEDT on 10 October 2016.

One of the key changes is that a registration fee will no longer be payable for Australian trade mark applications filed on, or after, 10 October 2016. Under the existing regime, the usual filing fees for an Australian trade mark application were AUD200 per class, with AUD300 per class payable on registration. Under the new regime, the usual filing fee will increase to AUD330 per class, but no further official fees will be payable.

Federal Circuit Confirms Post-Licensure Notice of Commercial Marketing Is Mandatory in Biosimilar Litigation

Jul 21 2016

On July 5, 2016, a unanimous Federal Circuit panel held that Apotex failed to give Amgen proper notice of commercial marketing required by the Biologics Price Competition and Innovation Act (“BPCIA” or “Biologics Act”)[1] and must wait 180 days after giving Amgen post-licensure notice before commercially marketing its FDA-licensed biosimilar product.[2] In affirming the district court’s preliminary injunction against Apotex until the end of the 180-day period, the Federal Circuit followed its previous holding in Amgen v. Sandoz,[3] a split-panel decision. The court reiterated the bright-line rule that a biosimilar applicant must provide notice of commercial marketing to a reference product sponsor after the FDA grants licensure of the biosimilar product and cannot launch its product until 180 days following that post-licensure notice.

Please click here to view the alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Kenneth C. Liao

ECJ Confirms that Brand Owners can Seek Remedies for IP Infringement Against Owners and Operators of Physical Marketplaces Selling Counterfeit Goods as “Intermediaries”

Jul 14 2016

On 7 July 2016, the Court of Justice of the European Union (ECJ) announced its judgment in case C-494/15, Tommy Hilfiger Licensing LLC and Others v Delta Center a.s.

The case concerned claims for trade mark infringement against Delta Center, the tenant of the “Prague market halls” marketplace, which rented sales spaces to sellers of counterfeit goods. Tommy Hilfiger and other trade mark owners brought an action before the Czech courts seeking an injunction under Article 11 of Directive 2004/48/EC, which states that: “Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC”.

New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability

Jul 06 2016

In a recent appeal decision in China, the international sportswear brand New Balance has unsuccessfully challenged a finding of trade mark infringement with respect to a Chinese language equivalent for NEW BALANCE. However, New Balance was able to reduce the amount payable as a result of its infringement by 95%.

The Communication to the Public is (Hyper) Linked to the Role of the User

Jul 01 2016

On 31 May 2016, the European Court of Justice (ECJ) issued its decision on the much-discussed issue of the requirements for a “communication to the public” in copyright infringement cases. It provided new guidelines on the interpretation of the article 3(1) of the InfoSoc Directive and article 8(2) of the Rental and Lending Rights Directive. The opportunity was given by the Regional Court of Cologne (Germany) that made a request for a preliminary ruling in the proceeding Reha Training v. GEMA, concerning the TV broadcast by means of TV sets on the premises of a rehabilitation centre. According to GEMA (the German copyright collection society), Reha Training failed to request permission and to pay the due royalties for communicating to the public TV programmes which belong to its repertoire.

Can Trademarks Constituted by the Shape of a Product be Protected in the Jewelry Sector?

Jun 24 2016

Cartier Wins Over the Request of Interim Relief by an Italian Company

Recently, an order of the court of Venice raised the matter of the shape of the product intended as a ground for refusal to registration and invalidity of a trademark.

The case is also interesting because it relates to the luxury sector and involved a leading firm in the jewelry sector, Cartier. An Italian jewelry producer, Fope S.r.l., sued Cartier alleging trademark counterfeiting and unfair competition for having marketed a jewelry collection reproducing a particular element of its icon product. This iconic shape was previously registered as an Italian and European trademark. Cartier claimed the registered trademarks were invalid on the basis that they are composed by the shape giving a substantial value to the product and such circumstance represents a ground for refusal to registration by law.

Vademecum on the Assessment of the Likelihood of Confusion Between Trademarks

Jun 21 2016

Italian Supreme Court Outlines Criteria to Conduct a Proper Likelihood of Confusion Test

On 27 May 2016, the Italian Supreme Court released a judgement recalling with clarity and completeness most of the consolidated principles concerning the assessment of the likelihood of confusion between trademarks. This judgement is to become a good instrument for professionals when addressing to the topic at issue as well as a reference for future decisions of the Courts of merit.

Design Confusion Post-Trunki?

Jun 19 2016

The UK Intellectual Property Office Publishes Helpful Guidance on the Use of Representations When Filing Registered Design Applications.

Following the recent Supreme Court judgement in PMS International Limited v Magmatic Limited [2016] UKSC 12, otherwise known as the ‘Trunki case’, the UK Intellectual Property Office has published helpful guidance on the use of representations when filing Registered Design applications. The guidance is directly relevant to design applications filed in the UK but will also be useful for Community design applications filed at the EUIPO.